WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Nutri/System IPHC, Inc. v. Altemar Freitas

Case No. D2008-0690

1. The Parties

Complainant is Nutri/System IPHC, Inc., Wilmington, Delaware, United States of America, represented by High Swartz LLP, Norristown, Pennsylvania, United States of America.

Respondent is Altemar Freitas, Marlborough, Massachusetts, United States of America.

2. The Domain Name and Registrar

The disputed domain name <nutrisystemforever.com> is registered with GoDaddy.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 1, 2008. On May 5, 2008, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the domain name at issue. On May 5, 2008, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on May 14, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was June 3, 2008. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 5, 2008.

The Center appointed Jeffrey D. Steinhardt as the sole panelist in this matter on June 16, 2008. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

Complainant’s parent company is a leading provider of weight-loss programs, which are marketed in many countries. Complainant owns many trademark registrations for NUTRISYSTEM in the United States of America, and elsewhere, including U.S. Trademark Registration number 1,251,922 in Class 42, with first use dated July 1979.

Publicly available records indicate that the disputed domain name was registered on May 22, 2007. The web page to which the disputed domain name resolves is presently a parking page which provides sponsored links to weight-loss products of competitors of Complainant and makes negative references to Complainant’s products. In late April, through mid-May 2008, based on annexes to the Complaint and screen prints made by the Center, the disputed domain name routed Internet users to a Portuguese-language website. That website promoted distributorships and products of a company named “Forever Living Products”, including cosmetics and nutritional supplements. Also included on the Portuguese-language website were promotional videos about weight loss.¹

5. Parties’ Contentions

A. Complainant

Complainant contends that the disputed domain name is confusingly similar to Complainant’s marks. Complainant also alleges the Respondent has no legitimate rights or interest in the disputed domain name, that Respondent is not commonly known by the name, and that Complainant has not licensed or otherwise permitted Respondent to use Complainant’s trademark.

Complainant notes that Respondent is presumably deriving income by virtue of consumers visiting Respondent’s website providing information about Forever Living Products distribution, therefore, Complainant contends that Respondent is not making non-commercial or fair use of the disputed domain name. Finally, Complainant alleges that Respondent registered and is using the domain name in bad faith, since Complainant’s marks are well known, Respondent’s domain name is virtually identical to the marks, and, for purposes of gaining revenue, Respondent routes Internet users to a web page that has no relation to Complainant’s products.

Complainant avers that on March 13, Complainant’s counsel sent an email and letter to Respondent describing Complainant’s proprietary rights and demanding that Respondent cease use of and transfer the disputed domain name to Complainant. Complainant avers that the hard-copy letter was returned as undeliverable and that there was no response to counsel’s email.

B. Respondent

Respondent did not reply to Complainant’s contentions, although courier records indicate that Respondent received notice of this proceeding and the Complaint.

6. Discussion and Findings

The Rules require the Panel to decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Rules, paragraph 15(a). Complainant must establish each element of paragraph 4(a) of the Policy, namely:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(ii) the respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

The complainant must establish these elements even if the respondent does not reply. The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064. In the absence of a reply, the Panel may also accept as true the factual allegations in the Complaint. E.g., ThyssenKrupp USA, Inc. v. Richard Giardini, WIPO Case No. D2001-1425 (citing Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009).

A. Identical or Confusingly Similar

Although the disputed domain name <nutrisystemforever.com> is not identical to Complainant’s trademark, the Panel agrees with Complainant that Respondent’s domain name is confusingly similar thereto.

Panels disregard the “.com” suffix in evaluating confusing similarity. E.g., VAT Holding AG v. VAT.com, WIPO Case No. D2000-0607; Shangri-La International Hotel Management Limited v. NetIncome Ventures Inc., WIPO Case No. D2006-1315.

The Panel concludes that the addition of the descriptive term “forever” does not negate the confusing similarity created by Respondent’s use of Complainant’s NUTRISYSTEM trademark in the disputed domain name. E.g., Giata Gesellschaft für die Entwicklung und Vermarktung interaktiver Tourismusanwendungen mbH v. Keyword Marketing, Inc., WIPO Case No. D2006-1137; Hoffmann-La Roche Inc. v. Aneko Bohner, WIPO Case No. D2006-0629.

The Panel finds that the disputed domain name is confusingly similar to the Complainant’s registered trademark and that the requirements in paragraph 4(a)(i) of the Policy therefore are fulfilled.

B. Rights or Legitimate Interests

The Panel also concludes that Respondent has no rights or legitimate interests in the domain name.

The Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in the use of a domain name. The list includes: (1) using the domain name in connection with a bona fide offering of goods and services; (2) being commonly known by the domain name; or (3) making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers. Policy, paragraphs 4(c)(i) – (iii).

A complainant must show a prima facie case proving the negative that a respondent lacks rights or legitimate interests. E.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455. The absence of rights or legitimate interests is established if a complainant makes out a prima facie case and the respondent enters no response. Id., (citing De Agostini S.p.A. v. Marco Cialone, WIPO Case No. DTV2002-0005).

Complainant avers that Respondent was not commonly known by the disputed domain name, that Respondent necessarily knew of Complainant’s marks, and that Respondent was without any license or authorization by Complainant. Complainant also contends that Respondent’s use of the disputed domain name to route Internet users to the Forever Living Products website and other advertising links precludes the possibility that Respondent is making legitimate non-commercial use of the name. The Panel agrees.

Since Respondent did not respond to the Complaint, the Panel accepts as true Complainant’s specific factual averments that: Respondent was not commonly known by the disputed domain name; that, through constructive notice, Respondent would have been aware of Complainant’s marks; and that Respondent lacked license or authorization by Complainant to use the disputed domain name. Complainant has established a prima facie case on these elements and Respondent has chosen not to respond.

Respondent presumably received revenues when it routed traffic using the disputed domain name to the Forever Living Products website. At present, since the disputed domain name now routes users to a parking page with sponsored link advertising, the Panel infers that Respondent is receiving click-through revenues. The Bear Stearns Companies Inc. v. Darryl Pope, WIPO Case No. D2007-0593 (“[t]he Panel is free to infer that Respondent is likely receiving some pecuniary benefit . . . in consideration of directing traffic to that site” (citing COMSAT Corporation v. Ronald Isaacs, WIPO Case No. D2004-1082)). See Fat Face Holdings Ltd v. Belize Domain WHOIS Service Lt, WIPO Case No. D2007-0626; Sanofi-aventis v. Montanya ILtd, WIPO Case No. D2006-1079.

The Panel therefore agrees with Complainant in finding that Respondent’s use of the disputed domain name demonstrates Respondent’s lack of a legitimate non-commercial interest in, or fair use of, the domain name. E.g., Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784.²

Respondent’s commercial activities undertaken through use of the disputed domain name are neither fair use nor bona fide under the Policy. See, e.g. America Online, Inc. v. Xianfeng Fu, WIPO Case No. D2000-1374, cited in Hoffmann-La Roche Inc. v. Aneko Bohner, supra.

Respondent has not invoked any of the circumstances of paragraph 4(c) of the Policy to support the existence of its “rights or legitimate interests” in use of the domain name.

Accordingly, the Panel concludes that paragraph 4(a)(ii) of the Policy is satisfied

C. Registered and Used in Bad Faith

The Panel also finds that Respondent registered and used the disputed domain name in bad faith.

Paragraph 4(b) of the Policy provides a list circumstances that suggest bad faith registration. That list is not exhaustive, however, and panels may draw inferences about bad faith registration or use in light of the circumstances, such as whether the complainant has particularly strong trademark rights, whether Respondent does not respond to the Complaint, and whether there exists a lack of conceivable good faith uses for the domain name. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

In this case, the Panel is convinced that Respondent was aware of the good will of Complainant’s trade and service marks before registering the disputed domain name, which incorporates Complainant’s trademark in its entirety. Furthermore, Respondent has not responded to the Complaint. The Panel concludes, therefore, that Respondent registered the name in bad faith.

In using the domain name to route users to its own competing products website, the Panel infers that Respondent intended to attract, for commercial gain, Internet users to Respondent’s web site by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site. Policy Paragraph 4(b)(iv).

Moreover, under these circumstances, the Panel agrees that there is no conceivable good faith use for the disputed domain name by Respondent.³ See Cellular One Group v. Brien, WIPO Case No. D2000-0028; Telstra Corp., supra. Cf. Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 (use of well-known mark suggested opportunistic bad faith).

The Panel concludes, therefore, that Respondent is using the disputed domain name in bad faith and the Panel finds for Complainant on the third element of the Policy.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <nutrisystemforever.com> be transferred to Complainant.

Jeffrey D. Steinhardt
Sole Panelist

Dated: June 30, 2008

¹ Interestingly, counsel makes no reference to Respondent’s promotion of weight-loss or nutritional supplement products, which could be viewed as being in direct competition with Complainant’s business. See below Section 6B, at n.2

² Respondent’s use of Complainant’s trademarks to promote products that compete with Complainant’s products is also a strong indication of the lack of a legitimate non-commercial interest in, or fair use of, the domain name. E.g., F. Hoffmann-La Roche AG v. ActiveIdeas.com, Jason Peterson, WIPO Case No. D2007-1567 (citing Pfizer Inc. V. Jg a/k/a Josh Green, supra).

³ Respondent’s use of the domain name to earn click-through revenues, as explained above, is further evidence of the commercial nature of Respondent’s interest in the name.